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The Havana Club dispute rumbles on
One of the longest legal battles in the history of the drinks industry around the Havana Club name grinds on through America’s courts.
Bacardi has won an appeal to revive its fight to use the Havana Club name.
It has been given permission to sue the US Patent and Trademark Office (USPTO) which had previously ruled that Cuba’s government-owned Cubaexport could pay a late renewal fee to protect the name in 2016 — 10 years after the deadline had passed.
Cubaexport was prevented from renewing the trademark in 2006 because of the US trade embargo on Cuban products.
Bacardi argued that failure to comply with the statutory renewal deadlines “is not a minor technical defect which can be waived” by the USPTO.
The latest ruling clears the way for Bacardi to challenge the renewal and prove that “Cuba’s ill-gotten Havana Club trademark expired in 2006 and should have been stricken from the trademark registry at that time.”
In effect the dispute is between Bacardi and Pernod Ricard, which sells Cubaexport’s Havana Club rum everywhere except in the US.
Large market
Opening the US market to the Cuban-distilled Havana Club would be a big prize for the French giant.
Retail sales of rum in that market were worth about US$ 9 billion in 2022.
The original owner of the Havana Club trademark in the US was Cuban distiller José Arechabala.
But in 1960, Fidel Castro’s communist government seized and expropriated Arechabala’s assets without compensation.
By 1974 Arechabala’s original US trademark had expired, after which Cubaexport, registered the Havana Club name in the US for itself.
In 1994, Bacardi bought the Arechabala family’s remaining rights in the brand and began producing limited amounts of rum in Puerto Rico bearing the Havana Club name. 922 cases were sold in the US in 1995 and 1996.
Pending
Bacardi, then filed its own application to register the Havana Club name and petitioned the USPTO to cancel Cubaexport’s registration.
The USPTO denied Bacardi’s application because of Cubaexport’s preexisting registration and denied Bacardi’s cancellation petition. Bacardi then filed a civil action challenging the denial of cancellation. That lawsuit, filed in 2004, remains pending.
Rather as in the case of Jarndyce v Jarndyce in Dickens’ Bleak House, the lawyers for both sides will argue on.
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